The United States is Canada’s largest trading partner, and it is important for Canadian companies doing business in the U.S. to protect and enforce their trademarks rights in the U.S., as they do in Canada. While Canadian trademark laws and regulations are very similar to those of the U.S. in many respects, there are some important differences concerning the filing and prosecution of applications that should be kept in mind. The following outlines some of the most important differences.
Classification system. Canada does not adhere to a classification system for goods and services. As a result, an unlimited range of goods and services can be included in an application in Canada without attracting additional government filing fees. Such is not the case in the U.S., where each class included in an application attracts a filing fee of $325 U.S. Filing fees in the U.S. can therefore quickly become prohibitive.
Proposed use versus actual use and date of first use. When filing an application in Canada, the applicant must indicate whether the trademark has been used and, if so, provide a date of first use. When the trademark has been used, it is important to correctly file the application on the basis of use since the application cannot later be amended to claim use and can also be successfully opposed by a third party on the ground that the application was improperly filed. Similarly, claiming a date of first use that is before the actual date of first use can also provide a valid ground of opposition. However, in the U.S., it is not improper to file an application on the basis of proposed use or intent to use when there has been use, and the application can simply be amended to claim use when the time comes to file a Statement of Use.
Foreign registration basis. An applicant in Canada relying on a foreign application or registration as a basis for registration in Canada must also indicate that the trademark is in use, whether in Canada, the applicant’s home country or any other country. There is no such use requirement in the U.S. in order to base an application on a foreign application or registration.
Disclaimers. In 2007, the Canadian Trademarks Office disposed of disclaimer requirements of portions of trademarks that are not independently registrable (due to descriptiveness, for example). Disclaimers continue to be requested in the U.S.
Divided applications. Once an application based on proposed use or intent to use has been allowed in Canada and the U.S., it will only proceed to registration once a Declaration of Use (in Canada) or a Statement of Use (in the U.S.) has been filed. In the U.S., it is possible to divide the application so that the mark can issue to registration more quickly for those goods and/or services for which there has been use. The divided or “parent” application remains pending for the remaining goods and/or services. Such an option is not available in Canada; either the application is delayed until use has commenced in association with all of the goods and services listed, or the applicant opts to delete the goods and services in association with which use has not yet commenced and proceed in connection with the goods and/or services in association with which use has commenced. The applicant in Canada can file a separate application for the deleted goods and services or file an application to extend the registration to the deleted goods and services.
Samples of use. In Canada, an application can be filed on the basis of actual use, and there is no requirement to submit a specimen of use. Similarly, no specimen of use is required when filing a Declaration of Use. Such is not the case in the U.S. An application based on use must be accompanied with samples of use, as must a Statement of Use.
Supplemental register. The U.S. has both a Principal Register and a Supplemental Register. The Supplemental Register allows for the registration of marks that are considered to be descriptive. Canada only has single Register, and descriptive marks are not registrable unless the mark has acquired a certain level of distinctiveness in Canada.
Registration term, maintenance and renewal. The term of registration in Canada is 15 years, renewable indefinitely in increments of 15 years. In the U.S., the term is 10 years, renewable indefinitely in increments of 10 years. However, in order to maintain a registration in the U.S., the owner must file an affidavit or declaration attesting to current use between the fifth and sixth anniversaries of the registration together with a specimen of use. There is no such requirement in Canada to maintain the registration. Upon renewal, an owner in the U.S. must also submit a similar affidavit or declaration and a specimen. In Canada, the only renewal requirement is payment of the renewal fee.
Madrid Protocol. The Madrid Protocol in an international multilateral agreement for the registration of trademarks. The U.S. is a signatory to this agreement, which permits U.S. businesses and applicants to obtain trademark registration in over 80 countries around the world by filing a single application. Canada has not yet signed on to the Madrid Protocol. However, Canadian entities with U.S. or other foreign subsidiaries may, in certain circumstances, avail themselves of the Madrid Protocol in foreign jurisdictions.
Geneviève M. Prévost, Toronto
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